UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
SKYHOOK WIRELESS, INC.,
Plaintiff,
CIVIL ACTION
NO. 10-cv-11571-RWZ
v.
GOOGLE INC.,
Defendant.
DECLARATION OF SUSAN BAKER MANNING
IN SUPPORT OF GOOGLE INC.’S
MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS
AND, IN THE ALTERNATIVE, OPENING CLAIM CONSTRUCTION BRIEF
I, Susan Baker Manning, declare as follows:
1.
I am over 18 years of age. I am a partner of Bingham McCutchen
LLP, counsel for defendant and counterclaim-plaintiff Google Inc. I have personal
knowledge of the facts stated herein, except those stated on information and belief, and, if
called upon, could and would testify competently to them. I make this declaration in support
of Google Inc.’s Claim Construction Brief.
2.
Attached as Exhibit A is a true and correct Google’s Corrected
Amended Proposed Claim Constructions, which Google served on Skyhook consistent with
L.R. 16.6, the Joint Statement of the Parties (filed Dec. 7, 2010), and the agreement of the
parties.
3.
Attached as Exhibit B is a chart listing those terms the parties have
identified as in need of construction, or as to which Google contends the limitation is
indefinite and not amenable to claim construction. The chart also states each parties’
position for both disputed and stipulated claim terms.
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4.
Attached as Exhibit C is a true and correct copy of U.S. Patent No.
7,414,988 (“the ‘988 patent”). This document was produced with bates numbers
GSHFED_0000021-40.
5.
Attached as Exhibit D is a true and correct copy of U.S. Patent No.
7,433,694 (“the ‘694 patent”). This document was produced with bates numbers
GSHFED_0000041-60.
6.
Attached as Exhibit E is a true and correct copy of U.S. Patent No.
7,305,245 (“the ‘245 patent”). This document was produced with bates numbers
GSHFED_0000001-20.
7.
Attached as Exhibit F is a true and correct copy of U.S. Patent No.
7,474,897 (“the ‘897 patent”). This document was produced with bates numbers
GSHFED_0000061-74.
8.
Attached as Exhibit G is a true and correct copy of the prosecution
history of the ‘988 patent. This document was produced with bates numbers
GSHFED_0000154-273.
9.
Attached as Exhibit H is a true and correct copy of the prosecution
history of the ‘694 patent. This document was produced with bates numbers
GSHFED_0000274-372.
10.
Attached as Exhibit I is a true and correct copy of the prosecution
history of the ‘245 patent. This document was produced with bates numbers
GSHFED_00000075-153.
11.
Attached as Exhibit J is a true and correct copy of the prosecution
history of the ‘897 patent. This document was produced with bates numbers
GSHFED_0000373-475.
12.
Attached as Exhibit K is a true and correct copy of a document
showing the differences between the ‘988 patent and the ‘694 patent. Text present in the
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‘988 patent but not in the ‘694 patent is shown struck through and colored red. Text present
in the ‘694 patent but not in the ‘988 patent is shown underlined and colored blue.
13.
Attached as Exhibit L is a true and correct copy of a document
showing the differences between the ‘988 patent and the ‘245 patent. Text present in the
‘988 patent but not in the ‘245 patent is shown struck through and colored red. Text present
in the ‘245 patent but not in the ‘988 patent is shown underlined and colored blue.
14.
Attached as Exhibit M is a true and correct copy of a document
showing the differences between the ‘988 patent and the ‘897 patent. Text present in the
‘988 patent but not in the ‘897 patent is shown struck through and colored red. Text present
in the ‘694 patent but not in the ‘897 patent is shown underlined and colored blue.
15.
Attached as Exhibit N is a true and correct copy of a document
showing the differences between the ‘245 patent and the ‘897 patent. Text present in the
‘245 patent but not in the ‘897 patent is shown struck through and colored red. Text present
in the ‘897 patent but not in the ‘245 patent is shown underlined and colored blue.
16.
Attached as Exhibit O are true and correct copies of relevant pages
from THE AMERICAN HERITAGE SCIENCE DICTIONARY (1st ed. 2005).
17.
Attached as Exhibit P are true and correct copies of relevant pages
from THE COMPACT OXFORD ENGLISH DICTIONARY (2nd ed. 2004).
18.
Attached as Exhibit Q are true and correct copies of relevant pages
from THE MERRIAM WEBSTER DICTIONARY (6th ed. 2004).
19.
Attached as Exhibit R are true and correct copies of relevant pages
from MICROSOFT COMPUTER DICTIONARY (5th ed. 2002).
20.
Attached as Exhibit S are true and correct copies of relevant pages
from WEBSTER’S NEW WORLD COMPUTER DICTIONARY (10th ed. 2003).
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21.
Attached as Exhibit T are true and correct copies of relevant pages
from McGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS (6th
ed. 2003).
22.
Attached as Exhibit U are true and correct copies of relevant pages
from THE AMERICAN HERITAGE COLLEGE DICTIONARY (3rd ed. 2000).
23.
Attached as Exhibit V are true and correct copies of relevant pages
from COMPACT OXFORD ENGLISH DICTIONARY OF CURRENT ENGLISH (3rd. ed.
2005).
24.
Attached as Exhibit W are true and correct copies of relevant pages
from BARRON’S DICTIONARY OF COMPUTER AND INTERNET TERMS (8th ed.
2003 ).
25.
Attached as Exhibit X is Indefiniteness Invalidations Continue to Rise
Sharply in 2008, BNA Patent, Trademark & Copyright Journal, 77 PTCJ 576, March 27,
2009.
26.
Attached as Exhibit Y is a September 2, 2008 United State Patent and
Trademark Office Memorandum regarding Indefiniteness Rejections under 35 U.S.C. 112,
second paragraph.
27.
Attached as Exhibit Z is true and correct copy of Skyhook Wireless,
Inc.’s Second Amended Preliminary Claim Constructions.
28.
Attached as Exhibit AA is true and correct copy of a document entitled
“API Definition from PC Magazine Encyclopedia,” This document was produced with bates
numbers GSHFED_0008396-99.
29.
Attached as Exhibit BB is true and correct copy of a document entitled
“Wireless LAN Fundamentals: Mobility”. This document was produced with bates numbers
GSHFED_0008417-21.
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I declare under penalty of perjury that the foregoing is true and correct.
Executed on September 14, 2011, in Washington, D.C.
Susan Baker Manning
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Certificate of Service
I hereby certify that this document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic
Filing (NEF) and paper copies will be sent to those indicated as non-registered
participants, by federal express, on September 14, 2010.
/s/ Susan Baker Manning
Susan Baker Manning
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